Silver Lake Management, L.L.C. v. Alex Goldberg / Registrant ID No.: nec08g92g6e5t2n0
Claim Number: FA1404001554595
Complainant is Silver Lake Management, LLC (“Complainant”), represented by David C. Lee of Michelman & Robinson LLP, California, USA. Respondent is Alex Goldberg / Registrant ID No.: nec08g92g6e5t2n0 (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <silverlake.ventures>, registered with Name.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 16, 2014; the National Arbitration Forum received payment on April 17, 2014.
On April 17, 2014, Name.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <silverlake.ventures> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@silverlake.ventures. Also on April 17, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant, Silver Lake Management, L.L.C., is an internationally known asset management firm and is the recognized global leader in investment funding of technology ventures and companies.
ii. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SILVER LAKE mark (Reg. No. 2,466,275, registered July 3, 2001).
iii. Respondent’s <silverlake.ventures> domain name is identical to Complainant’s SILVER LAKE mark.
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. Respondent’s website merely directs visitors to multiple “Sponsored Listings” and “Related Links.”
iv. Respondent’s purpose in using the disputed domain name is to market the domain name for sale at $10,000.
i. The disputed domain name was registered and is being used in bad faith.
ii. Respondent’s <silverlake.ventures> domain name resolves to a website that invites visitors to “BUY THIS DOMAIN.”
iii. Respondent had constructive notice of Complainant’s rights in the SILVER LAKE mark.
B. Respondent
1. Respondent has not submitted a response to this case.
2. Respondent registered the <silverlake.ventures> domain name on February 8, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant argues that it is an internationally known asset management firm and is the recognized global leader in investment funding of technology ventures and companies. Complainant asserts that it owns a trademark registration with the USPTO for the SILVER LAKE mark (Reg. No. 2,466,275, registered July 3, 2001). See Complainant’s Exhibit J. The Panel observes that Respondent operates within the United States. Therefore, the Panel concludes that Complainant’s USPTO registration of the SILVER LAKE mark provides rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <silverlake.ventures> domain name is identical to Complainant’s SILVER LAKE mark. The Panel notes that Respondent omits the space in Complainant’s SILVER LAKE mark and merely adds a generic top-level domain (“gTLD”). The Panel determines that Respondent’s elimination of spaces and inclusion of a gTLD is irrelevant under a Policy ¶ 4(a)(i) confusingly similar analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Accordingly, the Panel holds that Respondent’s <silverlake.ventures> domain name is identical to Complainant’s SILVER LAKE mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant states that Respondent is not commonly known by the <silverlake.ventures> domain name. Complainant argues that there is no evidence in the WHOIS information establishing that Respondent is commonly known by any name even remotely resembling the disputed domain name. The Panel notes that Respondent is identified as “Alex Goldberg / Registrant ID No.: nec08g92g6e5t2n0” in the WHOIS record. See Complainant’s Exhibit E. Complainant further alleges that Respondent is neither affiliated with nor authorized by Complainant to use the SILVER LAKE mark. Consequently, the Panel finds that Respondent is not commonly known under the <silverlake.ventures> domain name according to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant claims that Respondent’s website resolving from the <silverlake.ventures> domain name merely directs visitors to multiple “Sponsored Listings” and “Related Links.” See Complainant’s Exhibit F. The Panel notes that Respondent’s disputed domain name also hosts links entitled “Electrical Training,” “$0.50 Domain Name Special,” “Register Your Trademark,” and others. Id. In Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), the panel found that respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to complainant. Thus, the Panel concludes that Respondent is not using the <silverlake.ventures> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant argues that Respondent’s purpose in using the <silverlake.ventures> domain name is to market the domain name for sale. Complainant contends that a visitor activating the “BUY THIS DOMAIN” link is redirected to a seller’s listing page (hosted by Sedo) offering to sell the disputed domain name for $10,000. See Complainant’s Exhibit F. As the Panel finds that Respondent has offered to sell the disputed domain name to the public, the Panel determines that Respondent does not have rights or legitimate interests in the <silverlake.ventures> domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Complainant asserts that Respondent’s <silverlake.ventures> domain name resolves to a website that invites visitors to “BUY THIS DOMAIN.” Complainant contends that Respondent has listed the disputed domain name for sale on Sedo for $10,000, an amount far exceeding its registration costs. See Complainant’s Exhibit G. In Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000), the panel found that respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name. Thus, the Panel concludes that Respondent’s willingness to sell the disputed domain name evidences bad faith use and registration under Policy ¶ 4(b)(i).
Complainant asserts that it registered the SILVER LAKE mark in 2001, providing constructive notice to Respondent of Complainant’s rights in the mark. Prior panels have not typically found that constructive notice of a mark was sufficient to find bad faith, but the Panel finds that Respondent had actual knowledge of Complainant's SILVER LAKE mark and therefore determines that Respondent registered the <silverlake.ventures> domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <silverlake.ventures> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: May 24, 2014
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